Boy Scouts threaten to sue Oakland-based Hacker Scouts over its name

OAKLAND -- Youth groups beware: Don't use "scouts" in your name unless you want a fight from one of the largest youth organizations in the country.

Oakland-based nonprofit Hacker Scouts, a group that fosters science, engineering and technology education, is learning that lesson.

Less than a year after the youth organization was formed, the Boy Scouts of America sent a letter demanding the removal of "scouts" from its name and threatening a lawsuit if Hacker Scouts refused to honor the request.

"Scouting has been around a lot longer than the Boy Scouts," said Samantha Cook, founder and executive director of Hacker Scouts. "It seems ridiculous that they can own that word."

The dispute began in May when Boy Scouts of America sent a letter telling the Oakland group that it was violating both trademark law and a federal charter by using the word "scout" in its name.

The Boy Scouts contend that it has the exclusive right to the word thanks in part to its trademark and in part to a federal law passed in 1916. That law gave the Boy Scouts of America a federal charter and the "exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts."

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Cook said her group has been trying to quietly resolve the dispute but decided to go public earlier this week after realizing that the Boy Scouts of America were in no mood to cooperate.

Cook said she doesn't believe the name Hacker Scouts violates either the Boy Scouts trademark protection or the federal charter granted to the organization by the U.S. Congress and signed into law by President Woodrow Wilson.

"It is very clear that we did not base any of our program on the BSA," Cook said, using the shorthand for Boy Scouts of America. "We didn't even look at the BSA to model our program. We don't have ranks, the kids don't earn their badges the same way."

Legal experts, however, said Hacker Scouts could run afoul of trademark law if people see the name and believe it is somehow related to or sponsored by the Boy Scouts of America.

"I can see a basis for a claim being made, whether the Boy Scouts would win the case would depend on whether their lawyers are able to show that people make a connection," said Peter Harvey, a trademark attorney at the San Francisco-based Harvey Siskind law firm. "Is there a likelihood of consumer confusion between Hacker Scouts and Boy Scouts? That is the legal question."

Harvey said the federal charter can also cause problems for Hacker Scouts if it is a detailed charter that specifically forbids other organizations from using the word "scouts" without permission from the Boy Scouts.

The Boy Scouts of America issued a prepared statement in which it said it was simply trying to protect its brand.

"While the BSA applauds any group whose aim is to use principles similar to the scouting program, the use of scouting trademarks, symbols, words and phrases are an essential part of scouting that creates a sense of belonging," said Deron Smith, public relations director of Boy Scouts of America. "The BSA has a responsibility to our members to maintain these unique assets."

Cook said she is uncertain what Hacker Scouts will do next. The group's board of directors plans to meet in the coming weeks to decide the next move.

The Boy Scouts "have pretty deep pockets, they have an entire legal defense fund that they can draw from and this is what they do," Cook said about the daunting task of challenging the group. "The scout mission, they say, is to serve kids, that is what we are doing and I don't understand why we just couldn't work together to serve the kids."